Garmin Intl Inc v. CardiacSense Ltd

1. Case Identification

• Case #: IPR2025-00195
• Patent #: 7,980,998
• Filed: November 19, 2024
• Petitioner(s): Garmin International, Inc.
• Patent Owner(s): Cardiacsense Ltd.
• Challenged Claims: 1-8, 10-16

2. Patent Overview

• Title: Device, system and method for measuring a training activity
• Brief Description: The ’998 patent discloses a personal device for measuring a training activity, such as swimming. The device uses a sensing unit comprising an accelerometer, a compass, and an optional gyroscope to measure parameters related to a participant's movement, location, and orientation.

3. Grounds for Unpatentability

Ground 1: Obviousness over Downey and MacIntosh - Claims 1-3 and 5-7 are obvious over Downey in view of MacIntosh.

• Prior Art Relied Upon: Downey (Patent 7,889,085) and MacIntosh (Application # 2008/0284650).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Downey disclosed a wrist-worn "watch device" for swimmers that uses an inertial sensor (including an accelerometer, compass, and optional gyroscope) to analyze swim strokes and provide feedback. However, to meet limitations requiring the characterization of a body part's location and orientation relative to an initial position using both linear and angular acceleration, Petitioner turned to MacIntosh. MacIntosh was asserted to teach a sports sensor with a 3-axis accelerometer and 3-axis gyroscope used to determine deviation from a known starting point by integrating acceleration over time (i.e., dead reckoning) to provide 3D motion information for athletes, including swimmers.
  • Motivation to Combine: A POSITA would combine MacIntosh’s advanced 3D motion tracking and dead reckoning capabilities with Downey’s swim watch to enhance its functionality. This combination would provide more robust and accurate analysis of a swimmer's stroke efficiency and turns, which was a stated goal in MacIntosh and a desirable improvement for the device in Downey.
  • Expectation of Success: Petitioner asserted success was expected because both references described wrist-worn devices for swimmers using similar sensor components. Integrating MacIntosh's well-understood gyroscopic sensing and dead reckoning algorithms into Downey’s existing architecture was presented as a straightforward modification for a POSITA.

Ground 2: Obviousness over Downey, MacIntosh, and Burton - Claims 8 and 12-16 are obvious over Downey in view of MacIntosh and in further view of Burton.

• Prior Art Relied Upon: Downey (Patent 7,889,085), MacIntosh (Application # 2008/0284650), and Burton (Patent 8,330,611).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground built upon the Downey/MacIntosh combination to address claims requiring additional sensing units and remote monitoring. Petitioner alleged Burton taught a system for monitoring swimmers that used multiple limb devices (e.g., on arms and legs) to capture performance data. Burton also disclosed wirelessly transmitting this data to a remote computer, such as a coach's tablet, for real-time display and analysis of multiple swimmers. Furthermore, Burton taught using the tablet's microphone to send verbal instructions back to the swimmers via earphones.
  • Motivation to Combine: A POSITA would add Burton's multi-sensor and remote coaching features to the Downey/MacIntosh device to create a comprehensive training system. This would allow for a more complete performance analysis by capturing data from both arm strokes and leg kicks, and would enable a coach to provide immediate, real-time feedback without interrupting the swimmer, a significant advantage over visual-only feedback on the wrist device.
  • Expectation of Success: Success was predictable because combining inputs from multiple sensors into a central processor and displaying data on a remote screen were well-known techniques. Burton provided a clear blueprint for a functional multi-sensor swimming analysis system, ensuring a high likelihood of success when integrating its concepts with the base device.

Ground 3: Obviousness over Downey, MacIntosh, Burton, Ohgi, and Takahashi - Claim 4 is obvious over the combination of prior art.

• Prior Art Relied Upon: Downey (Patent 7,889,085), MacIntosh (Application # 2008/0284650), Burton (Patent 8,330,611), Ohgi (a 2003 journal article), and Takahashi (Application # 2003/0018274).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground primarily added Takahashi to the prior combination to address claim 4's limitation of using infrared measurement to determine a trainee's pulse. Petitioner argued that while Downey disclosed the inclusion of a heart-rate monitor, it did not specify the technology. Takahashi was asserted to cure this deficiency by teaching a heart rate monitor specifically for swimmers that used an infrared LED. Takahashi’s monitor was integrated into a swimming cap, which it described as a stable and comfortable location for accurate measurement during exercise.
  • Motivation to Combine: A POSITA would implement Takahashi's infrared heart rate monitor into the combined training system to add a crucial physiological metric. Heart rate is a key indicator of athletic exertion, and Takahashi offered an implementation that was more accurate and less burdensome for swimmers than the chest-strap or wrist-based monitors of the time. The motivation was to create a more complete and accurate athlete monitoring tool.
  • Expectation of Success: The integration was presented as straightforward. The base device already included wireless communication capabilities, and Takahashi taught wirelessly transmitting heart rate data. Combining these known elements was well within the skill of a POSITA.
• Additional Grounds: Petitioner asserted additional obviousness challenges, including that claims 10-11 were obvious over Downey in view of general knowledge of a POSITA, and that claims 1-3 and 5-8 were also obvious over the four-way combination including Ohgi, which taught processing every single data point to improve accuracy.

4. Key Claim Construction Positions

• "each of the measurements": Petitioner argued this term, found in claims 1 and 8, was ambiguous. It could mean either (1) using data from each type of sensor (accelerometer, compass, etc.) to calculate location/orientation, or (2) calculating location/orientation for every individual sensor reading. Petitioner contended that its primary grounds adopted the broader first interpretation, while an alternative ground (relying on Ohgi) was presented to address the narrower second interpretation.
• "means for attaching": Petitioner argued this term invoked means-plus-function treatment. The stated function was "attaching the sensing unit to a user's body part." The corresponding structure disclosed in the ’998 patent was identified as a watch-style band, headband, strap, clamp, or other similar equivalent device.

5. Key Technical Contentions (Beyond Claim Construction)

• Priority Date Challenge: A central contention was that the ’998 patent was not entitled to its claimed priority date of September 11, 2006. Petitioner argued that the mandatory "compass" limitation in all challenged claims was absent from the priority applications (the ’315 and ’422 applications). Petitioner asserted this feature was new matter added on March 11, 2009, to overcome a rejection. Therefore, Petitioner contended the correct priority date for the challenged claims is March 11, 2009, which renders references like Downey and MacIntosh available as prior art.

6. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under §314(a) based on Fintiv factors was unwarranted. To support this, Petitioner proffered a Sotera stipulation, agreeing not to pursue in a parallel district court case any invalidity grounds that were raised or could have been reasonably raised in the IPR petition if the review is instituted.

7. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1-8 and 10-16 of the ’998 patent as unpatentable.